Since their initial adoption by the Northern District of California in the late 1990’s the concept of early, firm contentions – both for infringement and invalidity – has been a characteristic of patent local rules across the country. They represent a deliberate decision by the adopting courts to require parties in patent cases to take positions earlier than would be required under FRCP 26, and to require in most cases an order finding “good cause” to amend those contentions (certain amendments after Markman rulings don’t require an order but do require a certain showing). Judges that adopt such proceedings often claim that without them such complex cases would be unmanageable. Judge Ward, for example, asserted early during his tenure on the bench that patent cases needed such structure to be efficiently managed – and explained that as the reason why he adopted the N.D. Cal.’s patent rules for patent cases filed in his court.
Where a party doesn’t use one of the available mechanisms to amend its contentions, instead purporting to amend via email, interrogatory responses, smoke signals, or what have you – the outcome may be suboptimal, as this case shows. The case also shows that delay in moving to amend can have serious consequences.
The issue of when initial disclosures – not patent rule disclosures, but the Rule 26(a)(1)-ish ones which include lists of persons with knowledge – can be supplemented is one that doesn’t come up often. And a request that issues be sequenced at trial is even rarer. This order resolving requests for both is of interest to practitioners, since while these requests don’t come up often, they’re of great interest when they do.
Equitable defenses typically don’t get a lot of attention in patent cases. In this case the parties declined to present any evidence on the equitable defenses orally, instead submitting on the papers, but of course submitting additional briefing postverdict as well. Accordingly, the defendant’s equitable defenses of patent misuse and limitation of damages based on FRAND principles were resolved postverdict in the attached findings of fact and conclusions of law.
This case deals with the situation of a supplier intervening in a patent case brought against a retailer selling its products and subsequently seeking severance due to misjoinder under 35 USC Section 299, and transfer due to improper venue.
The conditioning of a jury question on an affirmative answer to a prior question is called a “stop instruction” because it explicitly tells the jury to “STOP” if it found “no” to the prior question.
A common example is an instruction to the jury not to answer a question asking if the patent claim is invalid if it just answered that the claim is not infringed. That isn’t the case in all trials – if it were then a no claims infringed / no claims valid verdict wouldn’t be possible, and most years that is either the most or the second most common single verdict locally. And it’s the most common defense verdict, certainly – for example in 2017 of the five noninfringement verdicts where invalidity was also submitted, the jury found the claims invalid in four. (It also found the claims invalid in a fifth case where the claims were infringed).
Last week the Federal Circuit addressed this issue in a case from Judge Gilstrap’s court and affirmed the court’s use of – and later enforcement of – the “stop instruction” under the interesting facts of that case.
While you’re enjoying Parker’s perfect snow angel from Tuesday, I wanted to note that the segment of patent litigation that was affected the most significantly by TC Heartland was pharmaceutical cases, and as I discussed in my paper presented in November, one of the potential solutions to the additional venue obstacles is multidistrict litigation (MDL) proceedings.
One recent EDTX case indicates that that perennial bridesmaid in search of a wedding may actually be approaching at least one altar.
Some patent cases conclude the trial phase of the case not with a trial before a jury, but with a post-trial bench trial on nonjury issues such as laches, inequitable conduct, or other equitable issues. This opinion reflects the court’s findings on the issue of equitable estoppel in a patent case, which was tried to the court following the jury trial.
And then there’s that pesky marking statute, 35 U.S.C. § 287(a). Under § 287(a), a patentee or other party selling a patented product under the patent must mark that product with the patent number to provide notice to the public that the product it may be pursuing is patented. (No, there is not a penalty for overuse of the letter “p”. Why do you ask?) If they don’t satisfy the marking statute, damages can be limited to the point that the word “presuit” will henceforth cause the patentholder uncontrolled crying fits. The issue of when a plaintiff has the burden of proving compliance with the marking statute at trial was the subject of an interesting order from across the street earlier today.
Earlier today Judge Rodney Gilstrap granted the motions to intervene in a patent infringement suit brought against a retailer by three suppliers. The motion was granted as an intervention as of right under FRCP 24, but the Court found intervention appropriate even under the standards for permissive intervention.
I posted several days ago on the show cause order Judge Gilstrap issued with respect to an attorney’s “systematic carelessness” in filings on behalf of the plaintiff in the Ruby Sands litigation. The full post is available to subscribers here. In an order memorializing the rulings at the hearing, Judge Gilstrap suspended the attorney’s ability to file new cases for 120 days, with the following language:
“Mr. Zimmerman’s repeated acts of negligence in his practice before this Court—as further expounded upon in the Court’s Order to Show Cause and on the record at the hearing – compel the Court to conclude that some targeted action should be taken to prevent further lapses in adequate compliance with the Federal Rules of Civil Procedure, the Local Rules of Practice and the direct instructions of the Court. Such is necessary to support and uphold the integrity of this Court. While Mr. Zimmerman admirably accepted fault at the hearing and made no excuses for his conduct, the fact remains that the instances which precipitated the Court’s Order to Show Cause nonetheless occurred and should be addressed.”
Accordingly, pursuant to Rule 11 of the Federal Rules of Civil Procedure the Court ordered that Mr. Zimmerman be prohibited from filing any new cases within the Eastern District of Texas for 120 days from the date of the hearing on April 26, 2017. The prohibition expires automatically, and does not affect Mr. Zimmerman’s ability to represent clients in cases currently pending.